U.S. Patent Prosecutors Desk Reference

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2016 Edition
ISBN: 9781522104216
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2016 Edition
ISBN: 9781522104209
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2016 Edition
ISBN: 9781522104209
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U.S. Patent Prosecutors Desk Reference (2016 Edition) by Joshua P. Graham & Thomas G. Marlow, assists patent prosecutors in responding to Office Actions issued by the United States Patent and Trademark Office (USPTO) rejecting patent application claims. It is a quick, reliable reference to assist prosecutors in creating, researching, and supporting patentability arguments. Each section of the reference work includes the basis for the rejection, responses to the rejection, and legal authority supporting the responses. The 2016 Edition cites to the Manual of Patent Examining Procedure and offers comprehensive and updated sources of law that correspond to recent rejections made by the USPTO.

Features

•   Assists patent prosecutors in responding to Office Actions issued by the U.S. Patent and Trademark Office rejecting patent application claims
•   Provides a comprehensive and updated source of law, organized by sections corresponding to the types of rejections made by the USPTO
•   Cites five different authority sources: statutes, the "Manual of Patent Examining Procedure, 8th Edition;" decisions by the Patent Trial and Appeal Board (PTAB), the U.S. Court of Customs and Patent Appeals, and the U.S. Court of Appeals for the Federal Circuit

Reviews

"After reviewing Graham & Marlow's new desk reference for patent prosecution, I kept asking myself why no one had ever published anything like this before. In short, this is an absolutely wonderful resource for patent prosecutors who need to quickly draft effective and authoritative responses to a myriad of different USPTO rejections. You can either spend hours delving through a confusing array of regulations and court decisions, or you can pick up this desk reference and get the guidance and authorities you need for most prosecution questions in less than two minutes. I would strongly recommend it for any prosecutor." -- Steven W. Lundberg, Patent attorney and a founding partner of Schwegman, Lundberg & Woessner

"The U.S. Patent Prosecutor's Desk Reference is an essential practice guide for every patent attorney. It is much easier to rebut an Examiner's rejection when you have at your fingertips a collection of decisions by the CAFC, CCPA and BPAI in which the Examiner's rejection was reversed. Because these decisions are organized by rejection type, you can quickly find authority to bolster your argument that a particular rejection is improper. Using this reference will make even experienced patent prosecutors more efficient and effective." -- Ann McCrackin, Professor of Law and Director of the Patent Prosecution Program, University of New Hampshire School of Law (formerly Franklin Pierce Law Center)

Authors / Contributors

Table of Contents


CHAPTER 1

Section 1000 35 U.S.C. 101 Inventions Patentable


CHAPTER 2

Section 2000 35 U.S.C. 102 Conditions for Patentability, novelty and loss of right to patent


CHAPTER 3

Section 3000 35 U.S.C. 103 Conditions for Patentability, non-obvious subject matter


CHAPTER 4

Section 4000 35 U.S.C. 112 Specification


CHAPTER 5

Section 5000 Double Patenting


CHAPTER 6

Section 6000 35 U.S.C. 171 Patents for design


CHAPTER 7

Section 7000 35 U.S.C. 251 Reissue of defective patents


CHAPTER 8

Section 8000 Res Judicata